The American Lawyer - Intellectual Property, Fall 2011

infringement case. The appellate court remanded the matter back to Folsom for a more thorough review of whether EchoStar deserved a new trial.

While welcoming the partial victory, TiVo and its outside lawyers say they fear the new guidance from the Federal Circuit on how to assess redesigns like EchoStar’s will actually make litigating patent cases even more cumbersome—and enable defendants to avoid complying with injunctions that much longer.

“They didn’t clarify anything as far
as I’m concerned,” says TiVo GC Zinn,
who was hoping the appeals court would
address the need to stop infringers like
EchoStar from using supposed redesigns
that only involve minor changes to keep
filing appeals and getting stays. “That was
probably the most important thing to deal
with, and they just ignored it.”
F. Scott Kieff, a patent law professor
at George Washington University who
served as a consultant for TiVo is also
sorely disappointed. “This hasn’t been
the Federal Circuit’s finest hour,” he says.

Though parts of the decision are ostensi-
bly intended to give comfort to patentees,
Kieff maintains that in actual practice the
court played a big role in allowing Echo
Star to drag out the proceedings and keep
TiVo from getting its injunction enforced.
“They were bending over backwards to
grant stays,” he says, adding that he wor-
tion offers to other would-be infringers.
He notes that TiVo is currently pursuing
separate infringement cases against Veri-
zon Communications Inc. and AT&T Inc.
Those suits were both filed in the eastern
district of Texas in 2009, after the two
began offering cable television and DVR
service, and are currently in discovery. “Is

“If patents aren’t going to be enforced
on the back end,” says a TiVo consultant,
“nobody’s going to want to invest in them.”

ries about the message TiVo’s experience
sends about the efficacy of the patent
system. “You can spend gobs and gobs of
money to develop an innovative product
and get a patent and what do you get?”
he asks. “If patents aren’t going to be en-
forced on the back end, nobody’s going to
want to invest in them on the front end.”
Likewise, Morgan Reed of the Asso-
ciation for Competitive Technology says
he wonders about the lesson the litiga-
the lesson from EchoStar just fight it all
the way?” asks Reed.

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